Additional Patent Term Adjustment Potentially Available for Patents with IDS

Additional Patent Term Adjustment (PTA) may be available for some cases where an Information Disclosure Statement (IDS) was filed after a reply. Recently in Supernus Pharmaceuticals, Inc. v. Iancu, the U.S. Court of Appeals for the Federal Circuit held that the USPTO had incorrectly reduced the PTA based on applicant delay for a period of time during which there was no action that the applicant could take to conclude prosecution of the patent.

The USPTO calculated 1,386 days of PTA for the patent at issue, 8,747,897, based on 1,656 days of A delay (delays by the USPTO based on a failure to take certain actions within the specified time frames), plus 791 days of B delay (delays by the USPTO based on a failure to issue the patent within three years), reduced by 175 days of overlap between the A and B delays, and 886 days of applicant delay (delays by the applicant based on a failure to engage in reasonable efforts to conclude prosecution of the application). The determination of a 646 day applicant delay for the filing of an IDS was at issue in the case.

During prosecution of the application, a Request for Continued Examination (RCE) was filed on February 22, 2011. On August 21, 2012, in a related European application, the European Patent Office (EPO) notified the applicant that an opposition had been filed. On November 29, 2012 the applicant filed an IDS citing the opposition documents.

The USPTO calculated a 646 day applicant delay based on 37 C.F.R. §1.703(c)(8) for the filing of the IDS. Under 37 C.F.R. §1.703(c)(8) submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed is considered an applicant delay. The delay is calculated as the number of days beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or other such paper was filed. Here the IDS was considered an “other paper” filed after the RCE was filed and the delay was calculated based on the period between these two filings.

Supernus argued that out of the 646 day period that the USPTO attributed to applicant delay, it was entitled to at least 546 of those days (the period between its filing of the RCE and the EPO notification of the opposition) because it could not have been cited before the communication by the EPO.

While the Federal Circuit did not provide the correct calculation of applicant delays, it did hold that the USPTO calculation was inconsistent with the statute and mentioned that “the USPTO may not count as applicant delay a period of time during which there was no action that the applicant could take to conclude prosecution of the patent. Doing so would exceed the time during which the applicant failed to engage in reasonable efforts.”

Additional PTA may be available for patents with applicant delays based on filing an IDS after an RCE or any other reply if the applicant became aware of the cited document after the initial reply.

MaxVal offers a systematic review of the USPTO’s PTA calculation, which often results in increased PTA. We review all of the events in prosecution to determine the correct PTA. A report is provided detailing our calculation and comparing it to the PTO's calculation. We can also draft petitions for Patent Term Adjustment if additional PTA is found.